DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 7 and 7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 7, 17 recites “a transverse pentagon-shaped cross section” which is unclear as Examiner is unable to determine what a transverse pentagon actually is, and is therefore unable to determine the metes and bounds of the claim. For purposes of examination, this limitation will be interpreted as “the pentagon-shaped cross section is transverse to a longitudinal axis of the wear member”).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 8-13, 18-20, 22-23, 26, 34, 40, 45-48, and 58-60 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bilal et al. (Pat. No.: 10,508,418; hereinafter Bilal).
Regarding independent claim 1, Bilal discloses a wear member for earth working equipment comprising:
a mounting cavity (702) opening in a rear end of the wear member to receive a supportive base (102),
the mounting cavity having a front portion (720) and a rear portion (722),
the front portion (720) including
a first front bearing surface (721e) on a top or bottom side of the mounting cavity (See Fig. 10 where 721e is on top side of the cavity), and
two second front bearing surfaces (721b, 721d) on the top or bottom side of the mounting cavity that is opposite the top or bottom side having the first front bearing surface (See Fig. 10 where 721b and 721d are on the bottom side of the cavity which is opposite 721e on the top side);
the two second front bearing surfaces (721b, 721d) converging away from the first front bearing surface (721e) to meet at a central location on the top or bottom side (See annotated Fig. 10 where 721b and 721d move away from 721e toward 706 in the bottom half of the cavity),
the rear portion (722) including
a first rear bearing surface (704g) on the top or bottom side of the mounting cavity that is opposite the top or bottom side having the first front bearing surface (721e, See Fig. 10 where 704g is disposed on the bottom side of the cavity that is opposite the first front bearing surface 721e disposed on the top side), and
two second rear bearing surfaces (704a, 704c) on the top or bottom side of the mounting cavity that is opposite the top or bottom side having the first rear bearing surface (as seen in annotated Fig. 10),
the second rear bearing surfaces (704a, 704c) converging away from the first rear bearing surface (704g) to meet at a central location on the top or bottom side (See annotated Fig. 10 where 704a and 704c move away from 704g toward 706 in the top half of the cavity),
wherein the front and rear bearing surfaces bear against complementary surfaces on the supportive base during a digging operation (See cols. 11-12, lns. 34-50 where it discloses the bearing surfaces of the front and rear portions of the cavity are shaped to have surfaces corresponding with the various surfaces of nose 203).
Regarding claim 2, Bilal discloses the wear member of claim 1, and also discloses wherein the second front bearing surfaces in the front portion converge at a different angle than the second rear surfaces in the rear portion (See Fig. 10 where 721b, 721d have a different angle than 704a, 704c).
Regarding claim 8, Bilal discloses the wear member of claim 1, and also discloses wherein the second front bearing surfaces converge downward (See Fig. 10 where 721b,721d move downward to 721g) and the second rear bearing surfaces converge upward (See Fig. 10 where 704a, 704c move upward to 706)
Regarding claim 9, Bilal discloses the wear member of claim 1, and also discloses wherein the second front bearing surfaces converge upward (See Fig. 10 where 721b,721d move upward towards axis 719), and the second rear bearing surfaces converge downward (See Fig. 10 where 704a, 704c move downward towards the axis 719).
Regarding claim 10, Bilal discloses the wear member of claim 1, and also discloses including a lock opening communicating with the mounting cavity to receive a lock (106) to secure the wear member to the supportive base (See col. 6, lns. 35-48 for a general disclosure of the lock).
Regarding claim 12, Bilal discloses the wear member of claim 1, and also discloses wherein the mounting cavity includes a longitudinal axis (718) extending in a direction the base is received into the mounting cavity, and each of the front and rear bearing surfaces axially extend at an angle of five degrees or less to the longitudinal axis (See col. 14, lns. 61-64 where it discloses “the angle of the eight substantially planar surfaces with respect to the longitudinal axis may be within a range of 5-25 degrees”).
Regarding independent claim 13, Bilal discloses A wear member for earth working equipment comprising a mounting cavity (702) opening in a rear end to axially receive a supportive base (102), the mounting cavity including a front portion and a rear portion,
the front portion (720) including front bearing surfaces having a first front bearing surface (721e) extending side to side (i.e., along axis 719) at a top of the mounting cavity (as seen in annotated Fig. 10) and two second front bearing surfaces (721d, 721g) at a bottom of the mounting cavity converging in a direction away (i.e., moving away from) from the first front bearing surface (721e), wherein each of the second front bearing surfaces at least partially overlap with the first front bearing surface in a vertical direction (See annotated Fig. 10 where 721d and 721g are depicted as overlapping with 721e),
the rear portion (722) including rear bearing surfaces having a first rear bearing surface (704g) extending side to side (i.e., along axis 719) at the bottom of the mounting cavity (as seen in annotated Fig. 10) and two second rear bearing surfaces (704c, 704e) at the top of the mounting cavity converging in a direction away from (i.e., moving away from) the first rear bearing surface (704g), wherein each of the second rear bearing surfaces at least partially overlap with the first rear bearing surface in a vertical direction (See annotated Fig. 10 where 704c and 704e are depicted as overlapping with 704g),
wherein the front and rear bearing surfaces bear against complementary surfaces on the supportive base during a digging operation (See cols. 11-12, lns. 34-50 where it discloses the bearing surfaces of the front and rear portions of the cavity are shaped to have surfaces corresponding with the various surfaces of nose 203).
Regarding claim 18, Bilal discloses the wear member of claim 13, and also discloses including a lock opening communicating with the mounting cavity to receive a lock (106) to secure the wear member to the supportive base (See col. 6, lns. 35-48 for a general disclosure of the lock).
Regarding claim 19, Bilal discloses the wear member of claim 13, and also discloses wherein the mounting cavity includes a longitudinal axis (718) in a direction the base is received into the mounting cavity, and each of the front and rear bearing surfaces axially extend substantially parallel to the longitudinal axis (as seen in Fig. 7B and Fig. 10).
Regarding claim 20, Bilal discloses the wear member of claim 13, and also discloses wherein the mounting cavity includes a longitudinal axis (718) extending in a direction the base is received into the mounting cavity, and each of the front and rear bearing surfaces axially extend at an angle of five degrees or less to the longitudinal axis (See col. 14, lns. 61-64 where it discloses “the angle of the eight substantially planar surfaces with respect to the longitudinal axis may be within a range of 5-25 degrees”).
Regarding claim 20, Bilal discloses the wear member of claim 13, and also discloses wherein the mounting cavity includes a longitudinal axis (211) extending in a direction the base is received into the mounting cavity, and each of the front and rear bearing surfaces (202/4a, 202/4c) axially extend at an angle of five degrees or less to the longitudinal axis (211, as seen in Fig. 2).
Regarding independent claim 22, Bilal discloses a wear member for earth working equipment comprising:
a supportive base (102) having a mounting portion (as seen in Fig. 2)
a mounting cavity (702) opening in a rear end of the wear member to receive a supportive base (203),
the mounting cavity having a front portion (720) and a rear portion (722),
the front portion (720) including
a first front bearing surface (721e) on a top or bottom side of the mounting cavity (See Fig. 10 where 721e is on top side of the cavity), and
two second front bearing surfaces (721b, 721d) on the top or bottom side of the mounting cavity that is opposite the top or bottom side having the first front bearing surface (See Fig. 10 where 721b and 721d are on the bottom side of the cavity which is opposite 721e on the top side);
the two second front bearing surfaces (721b, 721d) converging away from the first front bearing surface (721e) to meet at a central location on the top or bottom side (See annotated Fig. 10 where 721b and 721d move away from 721e toward 706 in the bottom half of the cavity),
the rear portion (722) including
a first rear bearing surface (704g) on the top or bottom side of the mounting cavity that is opposite the top or bottom side having the first front bearing surface (721e, See Fig. 10 where 704g is disposed on the bottom side of the cavity that is opposite the first front bearing surface 721e disposed on the top side), and
two second rear bearing surfaces (704a, 704c) on the top or bottom side of the mounting cavity that is opposite the top or bottom side having the first rear bearing surface (as seen in annotated Fig. 10),
the second rear bearing surfaces (704a, 704c) converging away from the first rear bearing surface (704g) to meet at a central location on the top or bottom side (See annotated Fig. 10 where 704a and 704c move away from 704g toward 706 in the top half of the cavity),
wherein the front and rear bearing surfaces bear against complementary surfaces on the supportive base during a digging operation (See cols. 11-12, lns. 34-50 where it discloses the bearing surfaces of the front and rear portions of the cavity are shaped to have surfaces corresponding with the various surfaces of nose 203).
a lock (106) to secure the wear member to the supportive base (See col. 6, lns. 35-48 for a general disclosure of the lock).
Regarding claim 23, Bilal discloses the wear assembly of claim 22, and further discloses wherein the mounting portion (102) is a nose (203), the nose having a front portion (205) and a rear portion (207),
the front portion (205) of the nose including a nose first front bearing surface (202e) on a top or bottom side of the nose (See Fig. 2 where 202e is on the top), and two nose second front bearing surfaces (202d, 202b) on the top or bottom side of the nose opposite the nose first front bearing surface (See Fig. 2 where the second front bearing surfaces are on the bottom side), the two nose second front bearing surfaces (202d, 202b) converging toward or away from the nose first front bearing surface (202e), wherein the nose front bearing surfaces wall bear against the front bearing surfaces of the mounting cavity of the wear member (See col. 11, lns. 60-65 where it discloses the front bearing surfaces of the cavity correspond to the bearing surfaces of the front nose portion).
the rear portion (207) of the nose including a nose first rear bearing surface (204g) on the top or bottom side of the nose that is opposite the top or bottom side of the nose having the nose first front bearing surface (See Fig. 2 and Fig. 3B where 202e and 204g are disposed on the top and bottom sides respectively and therefore oppositely), and two nose second rear bearing surfaces (204c, 204a) on the top or bottom side of the nose that is opposite the top or bottom side having the nose first rear bearing surface (as depicted in Fig. 4B), the two nose second rear bearing surfaces converging toward or away from the nose first rear bearing surface (as seen in Fig. 4B), wherein the nose rear bearing surfaces bear against the rear bearing surfaces of the mounting cavity of the wear member (See col. 12, lns. 23-25 where it discloses the rear bearing surfaces of the cavity correspond to the bearing surfaces of the rear nose portion).
Regarding independent claim 26, Bilal discloses a wear member for earth working equipment comprising:
a supportive base (102) having a mounting portion (as seen in Fig. 2)
a mounting cavity (702) opening in a rear end of the wear member to receive a supportive base (203),
the mounting cavity having a front portion (720) and a rear portion (722),
the front portion (720) including front bearing surfaces having a first front bearing surface (721e) extending side to side (i.e., along axis 719) at a top of the mounting cavity (as seen in annotated Fig. 10) and two second front bearing surfaces (721d, 721g) at a bottom of the mounting cavity converging in a direction away (i.e., moving away from) from the first front bearing surface (721e), wherein each of the second front bearing surfaces at least partially overlap with the first front bearing surface in a vertical direction (See annotated Fig. 10 where 721d and 721g are depicted as overlapping with 721e),
the rear portion (722) including rear bearing surfaces having a first rear bearing surface (704g) extending side to side (i.e., along axis 719) at the bottom of the mounting cavity (as seen in annotated Fig. 10) and two second rear bearing surfaces (704c, 704e) at the top of the mounting cavity converging in a direction away from (i.e., moving away from) the first rear bearing surface (704g), wherein each of the second rear bearing surfaces at least partially overlap with the first rear bearing surface in a vertical direction (See annotated Fig. 10 where 704c and 704e are depicted as overlapping with 704g),
wherein the front and rear bearing surfaces bear against complementary surfaces on the supportive base during a digging operation (See cols. 11-12, lns. 34-50 where it discloses the bearing surfaces of the front and rear portions of the cavity are shaped to have surfaces corresponding with the various surfaces of nose 203).
a lock (106) to secure the wear member to the supportive base (See col. 6, lns. 35-48 for a general disclosure of the lock).
Regarding claim 34, Bilal discloses the wear member of claim 1, and also discloses wherein the front bearing surfaces (721e, 721d, 721b) are axially separated from the rear bearing surfaces (704g, 704c, 704a) by transition surfaces (See intermediate surfaces in Fig. 7B that axially separate the front and rear bearing surfaces).
Regarding claim 40, Bilal discloses the wear member of claim 1, and also discloses a front bearing wall extending across a front end of the mounting cavity (See Fig. 7B where the front bearing wall corresponds to wall perpendicular to axis 718 disposed at the front portion 720 of the cavity 702) for bearing against a front end (generally 220 as seen in Fig. 2) of the supportive base in a digging operation.
Regarding claim 45, Bilal discloses the wear member of claim 13, and also discloses a front bearing wall extending across a front end of the mounting cavity (See Fig. 7B where the front bearing wall corresponds to wall perpendicular to axis 718 disposed at the front portion 720 of the cavity 702) for bearing against a front end (generally 220 as seen in Fig. 2) of the supportive base in a digging operation.
Regarding claim 46, Bilal discloses the wear member of claim 13, and also discloses wherein the second front bearing surfaces converge to meet at a central location and the second rear bearing surfaces converge to meet at a central location. (See annotated Fig. 10 where 721d and 721g move away from 721e toward 706 in the bottom half of the cavity),
Regarding claim 47, Bilal discloses the wear member of claim 13, and also discloses a front bearing wall extending across a front end of the mounting cavity (See Fig. 7B where the front bearing wall corresponds to wall perpendicular to axis 718 disposed at the front portion 720 of the cavity 702) for bearing against a front end (generally 220 as seen in Fig. 2) of the supportive base in a digging operation, and a lock opening communicating with the mounting cavity to receive a lock (106) to secure the wear member to the supportive base (See col. 6, lns. 35-48 for a general disclosure of the lock).
Regarding claim 48, Bilal discloses the wear member of claim 40, and also discloses wherein the front portion (720) includes two third front bearing surfaces (721c, 721a) each extending between the first front bearing surface (721e) and one of the second front bearing surfaces (721d), and the rear portion (722) includes two third rear bearing surfaces (704d, 704b) each extending between the first rear bearing surface (704g) and one of the second rear bearing surfaces (704c).
Regarding independent claim 58, Bilal discloses a wear member for earth working equipment comprising:
a supportive base (102) having a mounting portion (as seen in Fig. 2)
a mounting cavity (702) opening in a rear end of the wear member to receive a supportive base (203),
the mounting cavity having a front portion (720) and a rear portion (722),
the front portion (720) including
a first front bearing surface (721e) on a top or bottom side of the mounting cavity (See Fig. 10 where 721e is on top side of the cavity), and
two second front bearing surfaces (721b, 721d) on the top or bottom side of the mounting cavity that is opposite the top or bottom side having the first front bearing surface (See Fig. 10 where 721b and 721d are on the bottom side of the cavity which is opposite 721e on the top side);
the two second front bearing surfaces (721b, 721d) converging toward the first front bearing surface (721e) to meet at a central location on the top or bottom side (See annotated Fig. 10 where 721b and 721d move toward 721e by partially angling toward the portions of 721h/721f below 719 in the bottom side),
the rear portion (722) including
a first rear bearing surface (704g) on the top or bottom side of the mounting cavity that is opposite the top or bottom side having the first front bearing surface (721e, See Fig. 10 where 704g is disposed on the bottom side of the cavity that is opposite the first front bearing surface 721e disposed on the top side), and
two second rear bearing surfaces (704a, 704c) on the top or bottom side of the mounting cavity that is opposite the top or bottom side having the first rear bearing surface (as seen in annotated Fig. 10),
the second rear bearing surfaces (704a, 704c) converging toward the first rear bearing surface (704g) to meet at a central location on the top or bottom side (See annotated Fig. 10 where 704a and 704c move toward 704g by partially angling toward the portion of the cavity above 719 in the top side of the cavity),
wherein the front and rear bearing surfaces bear against complementary surfaces on the supportive base during a digging operation (See cols. 11-12, lns. 34-50 where it discloses the bearing surfaces of the front and rear portions of the cavity are shaped to have surfaces corresponding with the various surfaces of nose 203).
Regarding claim 59, Bilal discloses the wear member of claim 58, and also discloses a front bearing wall extending across a front end of the mounting cavity (See Fig. 7B where the front bearing wall corresponds to wall perpendicular to axis 718 disposed at the front portion 720 of the cavity 702) for bearing against a front end (generally 220 as seen in Fig. 2) of the supportive base in a digging operation, and a lock opening communicating with the mounting cavity to receive a lock (106) to secure the wear member to the supportive base (See col. 6, lns. 35-48 for a general disclosure of the lock).
Regarding claim 60, Bilal discloses the wear member of claim 59, and also discloses wherein the mounting cavity includes a longitudinal axis (718) extending in a direction the base is received into the mounting cavity, and each of the front and rear bearing surfaces axially extend at an angle of five degrees or less to the longitudinal axis (See col. 14, lns. 61-64 where it discloses “the angle of the eight substantially planar surfaces with respect to the longitudinal axis may be within a range of 5-25 degrees”).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 7, 17, and 36 are rejected under 35 U.S.C. 103 as being unpatentable over Bilal in view of McIninch (Pat. No.: 3,049,824).
Regarding claims 7 and 17, Bilal discloses the wear member of claim 1 and claim 13 respectively, but fails to also disclose wherein the front and rear portion each have a transverse pentagon-shaped cross section perpendicular to a longitudinally axis of the mounting cavity. McIninch, in a similar field of endeavor, discloses a similar wear member (11) comprising a similar mounting cavity (30). More specifically, McIninch teaches wherein a front and rear portion of the cavity (30) each have a pentagon-shaped cross section (as best seen in Fig. 4 but also seen in Fig. 1) perpendicular to a longitudinal axis of the mounting cavity (30). Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to modify the octagonal-shaped cross section of the mounting cavity of Bilal to be the pentagonal-shaped of McIninch, with a reasonable expectation of success, since “the angularity obtained by using the pentagonal nose and socket permits highly effective working areas and angular relationships to be obtained for different types of soils with but a single shank and socket construction” (See cols. 3-4, lns. 74-3 respectively). Further, it is noted that those of ordinary skill in the art would appreciate that a modification such as a mere change in shape of a prior art device is a design consideration within the skill of the art.
Regarding independent claim 36, Bilal discloses a wear assembly comprising:
a base (102) defining a nose including a plurality of bearing surfaces (202e, 202a, 202c) axially extending substantially parallel to a longitudinal axis (211) of the nose, the bearing surfaces (202e, 202a, 202c) including a plurality front bearing surfaces (202e, 202a, 202c) formed generally along a distal end of the base and a plurality of rear bearing surface (204g, 204b, 204d) formed on the proximal end of the nose opposite from the distal end, wherein the front and rear bearing surfaces of the base generally define a polygonal shape transverse to the longitudinal axis (as seen in Fig. 6), and the rear bearing surfaces (204g, 204b, 204d) of the base are situated 180 degrees in rotation (See Fig. 4 where the rear bearing surfaces are disposed below the longitudinal axis, compare to Fig. 6 where the front bearing surfaces are disposed above the longitudinal axis thereby providing the claimed 180 degree rotation) about the longitudinal axis (211) relative to the front bearing surfaces (202e, 202a, 202c) of the base;
a wear member defining mounting cavity (702) to be mounted onto the base, the mounting cavity formed with complementary bearing surfaces to the bearing surfaces of the nose (See cols. 3-4, lns. 74-3 respectively), the complementary bearing surfaces including a plurality of complementary front bearing surfaces (721e, 721c, 721a respectively) formed generally along a distal end of the mounting cavity (See Fig. 10), and a plurality of complementary rear bearing surface (704g, 704d, 704b respectively) formed on the proximal end of the mounting cavity (702) opposite from the distal end; and
a lock to secure the wear member to the base (as seen in Fig. 2A, See col. 6, lns. 35-48 for a general disclosure of the lock).
Bilal fails discloses wherein the polygonal shape that is defined by the collective bearing surfaces is specifically a pentagonal shape.
McIninch, in a similar field of endeavor, discloses a similar wear member (11) comprising a similar mounting cavity (30). More specifically, McIninch teaches wherein a front and rear portion of the cavity (30) and wear member (11) have front and rear bearing surfaces that form a pentagon (as best seen in Fig. 4 but also seen in Fig. 1).
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to modify the polygonal cross section of the complementary bearing surfaces of Bilal to be the pentagonal-shape as taught by McIninch, with a reasonable expectation of success, since “the angularity obtained by using the pentagonal nose and socket permits highly effective working areas and angular relationships to be obtained for different types of soils with but a single shank and socket construction” (See cols. 3-4, lns. 74-3 respectively). Further, it is noted that those of ordinary skill in the art would appreciate that a modification such as a mere change in shape of a prior art device is a design consideration within the skill of the art.
Allowable Subject Matter
Claims 41-44 and 48-53 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 54-57 are allowed.
Response to Arguments
Applicant's arguments filed 08/12/2025 have been fully considered but they are not persuasive.
Applicant’s arguments with respect to claim(s) 1-2, 7-13, 17-20, 22-23, 26, 34, 36, 40-60 have been considered but are moot. Although Bilal is being relied upon as detailed above, it is being relied upon in a new capacity to address the amended/argued limitations.
Applicant’s argument that Bilal fails to disclose the two second front/rear bearing surfaces converging to meet at a central location” has been considered but is unpersuasive. Applicant appears to argue on pg. 1 that although the two second front/rear bearing surfaces converge toward each other, since they are spaced apart and connected by a central bearing surface 204e and 202e respectively they do not converge to a central location as required by the claim. Applicant should note that the term “a central location” is broad as it is not further defined in the claim. As such, a central location does not require that the second front/rear bearing surfaces not be spaced apart. Even further, the fact that both the two second front/rear bearing surfaces converge to meet at the central bearing surfaces, provides an interpretation that the central bearing surfaces serve as the central location thereby meeting the claim.
Applicant’s arguments on pg. 2 that it would not have bene obvious to replace the octagonal shaped cavity of Bilal with the pentagonal shaped cavity of McInnich are unpersuasive. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In the instant case, it would have been obvious to one having ordinary skill in the art to modify the polygonal cross section of the complementary bearing surfaces of Bilal to be the pentagonal-shape as taught by McIninch, since “the angularity obtained by using the pentagonal nose and socket permits highly effective working areas and angular relationships to be obtained for different types of soils with but a single shank and socket construction” (See cols. 3-4, lns. 74-3 respectively). Further, it is noted that those of ordinary skill in the art would appreciate that a modification such as a mere change in shape of a prior art device is a design consideration within the skill of the art.
Applicant's arguments on pg. 2 that “McInnish cavity still fails to discloses ‘rear being surfaces of the base [that] are situated 180 degrees in rotation about the longitudinal axis relative to the front bearing surfaces of the base’ as recited in claim 36 or ‘second rear bearing surfaces [that] converge in the upward or downward direction opposite the converging of the second front bearing surfaces’ as recited in claim 54” are unavailing a no further analysis of the rejection in view of McInnish is provided for by Applicant to make the above conclusory statement. Accordingly, they fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/A.L.L./Examiner, Art Unit 3671
/CHRISTOPHER J SEBESTA/Supervisory Patent Examiner, Art Unit 3671